Thursday, 23 May 2013

Imaginary claims and conflicting divisionals

After my last post about the "poisonous divisionals" hypothesis, I have been thinking about the issue a bit more, helped by some very useful comments on the post, as well as on other articles about the issue. I now have what I think is an answer that may make the problem go away.

For anyone who is not yet aware (and for those who are, simply skip to the next paragraph), the issue relates to a European patent application having a claim that is broader than anything in the priority application becoming invalid through lack of novelty once a divisional application is filed and published, because the divisional application becomes prior art under Article 54(3) EPC as a result of the claim not being entitled to priority. This strange result comes from a literal interpretation of the wording of Article 54(3), which makes no distinction between applications that may be related to the one in question and other applications (or indeed, as might be argued, the application itself).

My solution to the problem relates not to some unwritten rule that divisionals and priority documents should not be considered to be prior art (which some would argue), but to Article 88(2) EPC, which states:

"(2) Multiple priorities may be claimed in respect of a European patent application, notwithstanding the fact that they originated in different countries. Where appropriate, multiple priorities may be claimed for any one claim. Where multiple priorities are claimed, time limits which run from the date of priority shall run from the earliest date of priority".

The simplest way of thinking about a claim having more than one priority would be where the claim contains alternatives, in which case it can be easily divided into two or more separate claims. Some alternatives might have a valid claim to priority, while others might not. Let's say a claim is directed to a widget made of copper or iron, and the priority document discloses only copper. The claim is entitled to priority only for the copper widget, but the claim can be rewritten anyway to: i) a widget made of copper; and ii) a widget made of iron. The first claim would be entitled to priority, and therefore not at risk if a divisional is filed, while the second lacks a valid priority claim but is novel over the priority disclosure, so would also not be at risk.

No distinction in Article 88(2) is made regarding the form the claim takes. More complicated forms of claims can therefore also have multiple claims to priority, although separating them out may be more tricky. To take a slightly more complicated example, let's say claim 1 is directed to a widget made of metal, and the priority document only discloses widgets made of copper. The claim cannot easily be divided into two from the wording alone, but can at least theoretically be considered to be two claims: i) a widget made of copper; and ii) a widget made of a metal other than copper. These claims together have the exact same scope as the original claim. As before, the first claim is entitled to priority and is therefore not at risk if a divisional is filed, while the second claim is novel over the priority disclosure and is therefore also not at risk.

Some of the discussions about how to tackle the conflicting divisionals problem focus on what kinds of disclaimers might be used to get around the problem in this kind of way. In my view this misses the point, although the idea does get part of the way there. The concept that a broad claim can theoretically be divided into two parts, one of which is entitled to priority and the other which is inevitably novel over the priority disclosure, is itself sufficient to overcome the problem even if the exact form of wording is not easily derived from the application. This is because the collective scope of the resulting two imaginary claims would be exactly the same as the original claim, and Article 88(2) EPC indicates that there is no need to actually rewrite the claim to be two separate claims. There is therefore no need to find the right form of wording to satisfy added matter requirements because no amendment is needed.

I see a nice parallel here with mathematics, where imaginary numbers are of great use in solving real problems, for example in finding the roots of a cubic function or in modelling electrical circuits in response to time-varying signals. Just because there is no real solution to the square root of -1 does not mean that an imaginary solution (usually termed i) cannot be a useful way of looking at a particular problem where this might arise. In the same way with problematic claims, just because there may not be a way of rewriting the claim as two parts, each of which would be valid for different reasons, does not mean that considering such imaginary claims cannot be a useful way of solving the problem of conflicting divisionals.

As usual I may, of course, be wrong. Any thoughts on the issue would be welcome.

Update 25 May: A commenter has pointed me to T 1222/11, which seems to support the idea. See point 11.5.5 in particular.

Update 15 June: There is an interesting discussion on the IPKat here on the related issue in the Nestec v Dualit case.

Update 31 November 2016 / 7 February 2017: I have been proved right! See my posts on the outcome of G 1/15 here and here.

18 comments:

I agree that this must be the first line defence. However, it doesn't really deal with those cases which fail the test in paragraph 6.7 of G2/98 for the ability to notionally split the priority of a generic claim. There might be a technology divide here - many biotech claims might be expected to fail the test, but perhaps such a failure would be much less likely in other arts.

Yes, the problem is that in that paragraph the EBA states that notional splitting of priority for a generically defined claim (which is what I think your suggestion amounts to, unless I've missed something), is acceptable if the generic part of the claim "...gives rise to the claiming of a limited number of clearly defined alternative subject-matters."

However, in many cases that condition is hard to meet (largely because the EBAs wording is unclear). In the biotech arena (although I can't think of an OD decision or T decision off the top of my head), this approach to splitting priority (not necessarily in 'poisonous divs' cases) is sometimes denied where, for example the generic term of the claim covers a very large number of possibilities. For example, if a claim referred to a molecule conjugated to 'a protein' it would not be surprising for an ED or an OD, or even a BOA to deny separating one protein out of all possible proteins (essentially an infinite group of macromolecules), and according to it a different priority date.

Similarly, in chemistry, where an R group is defined as 'aliphatic', for example, the same issue might arise. I'm suspect that other readers might have experienced, or be able to imagine other generic terms which don't easily give rise to a limited number of clearly defined alternatives.

The multiple priorities of Art. 88(2) EPC only applies to OR-claims (G 2/98, points 6.3-6.7). To really apply this approach it should at least theoretically be possible to rewrite the claim as an OR-claim without infringing Art. 123(2). In general this is not possible.

However, in the case at hand at least at first sight one could, on the one hand, disclaim the novelty destroying embodiment based on G 1/03 and, on the other hand, claim exactly that novelty destroying embodiment. Two separate claims can be made into an OR-claim without any problem. The resulting claim would be new and would be identical in scope to the original claim.

If it is theoretically possible to do this exercise without infringing Art. 123(2), then the problem is solved. It makes no sense now to force the applicant or proprietor to actually perform this exercise (and end up with an ugly claim that is not of any help to anyone).

G 1/03 is crucial here. But now comes the problem. G 2/10 explicitly states that G 1/03 did not deal with the case that the disclaimed subject-matter is disclosed in the application.

One might say this is not a problem. G 1/03 did not deal with it, but that does not mean that different rules would apply. Why should it not be allowed to disclaim an Art. 54(3) prior art only because that same novelty destroying subject-matter is present in the application?

However, this is exactly what the President of the EPO proposed to the EBA in his observations for G 2/10. The EBA discusses this proposal in point 4.7 of G 2/10. Unfortunately I don't quite understand what the EBA meant to say there, but they don't agree with the President.

Anyway, this approach should certainly be tried. Maybe it will work, maybe not.

A more fundamental approach would be to base the reasoning directly on the legislative history and purpose of Art. 54(3) as discussed in G 1/03. G 1/03 allowed certain disclaimers in order to fairly divide the rights to the invention between the applicant that filed the Art. 54(3) prior art and the applicant that filed the later application. If the applicants coincide and the two applications are in fact indistinguishable (both disclosing the specific embodiment with the priority date as effective data and the more generic embodiment with the filing date as effective date), it is not fair that part of the rights to the invention go to nobody. The fair solution is to ignore fictitional Art. 54(3) prior art in so far as it is identical (both in scope and in effective filing date) to what the application discloses.

So that's where I got the metal and copper idea from. Thanks for pointing me to it. As I mentioned in the post, it's almost the solution but not quite. I've read the part of G 2/98 and can't see that it would disallow the kind of reasoning here, however I can certainly see an argument against it based on the decision. It may well be that an argument based on A54(3) as well, perhaps together with G 1/03, would be needed to get rid of the problem.

G 2/98 would not disallow two priority dates for the "theoretical" OR-claim, but in the metal/copper example this theoretical OR-claim has no basis in the application as filed, so this claim being novel does not help you.

I do believe that Art. 88(2) requires a real OR-claim before it can be applied, because this is what G 2/98 says. But I agree with you again that once it has been shown that a claim can be achieved that is new and has the same scope, there is no need to have the distorted OR-form in the patent (for pragmatic reasons).

The problem I see with the proposal is potential conflict with Article 84. The purpose of this section is to ensure the public is not left in any doubt as to the subject-matter claimed. However, if the application claiming priority claims a widget made of metal but the priority document simply describes a widget made of copper comprising a number of other features as well, in determining which parts of the claims have a valid claim to priority, a third party will have to determine every imaginary claim that could have been claimed based on the disclosure in the priority document, e.g are the other features descibed as essential to the invention or can the concept of a widget made of copper but not the other features be clearly and unambiguously derived from the priority document. To me this lack of clarity with regards to the bounds of the claim appears contrary to Article 84.

What comes to mind is the following (not so uncommon) scenario: We file a first application A1 disclosing "X plus copper", the inventor improves on the invention, and later we file a second application A2 claiming "X plus metal" (without claiming priority from A1 for A2). Finally, we file a third application A3 claiming "X plus metal" and claiming for A3 the priority of both A1 and A2. This creates an interesting situation: 1. The subject matter "X plus metal" of A2 wasn't new at the date of its filing due to A1. 2. Nevertheless, you need to claim both priorities for A3 to prevent A2 from becoming a problem. 3. Can you even claim priority from A2, i.e. was it "the first application" (Art.87 I think) ?. Well, now I'm considering claiming all possible priorities among priority applications and then withdrawing them all so they don't get published ... Greetings from Switzerland, Amon

There is only a problem if A1 and/or A2 are (published as) an EP applications. (I seem to remember a decision where the applicant argued that it could not be the case that filing the priority as an EP was disadvantageous compared to filing the priority with other offices, but this did not convince the Board. Of course it is the publication and not the filing that is responsible for the Art. 54(3) problem.)

In my view "X plus metal" in A3 has a valid priority from A2. The earlier A1 does not disclose the "same" invention, so A2 is the first filing for "X plus metal". T 1222/11 might have a different view of this, though (but I still need to study it better).

In case A2 and A3 also disclose "X plus copper", e.g. in the description or in a dependent claim, then that element of A3 does not benefit from the priority of A2, since A1 is the first application for "X plus copper". However, A3 does claim priority from A1, so "X plus copper" in A3 in fact has the priority date of A1.

If A1 is published as EP, in principle it is novelty destroying for "X plus metal" in A3. I believe the situation is very similar to the "poisonous divisional" scenario. Arguing multiple priorities might be a way out, but you need either the (imho shaky) view of T 1222/11, or the (also not rock solid) approach of rewriting using disclaimers based on G 1/03.

If A1 is not published as EP but A2 is, you should be safe. But if A3 had not claimed priority from A1, there would have been a problem with a (dependent) claim to "X plus copper", because that claim would not have priority from A2, but A2 (most probably) discloses "X plus copper" with as effective date the filing date of A2, which destroys the novelty of "X plus copper" in A3.

This scenario shows that the issues being discussed here are not specific to divisionals. Another not uncommon scenario is the case where an application files multiple applications with identical description and different claims, all claiming the same priority.

The difference with poisonous divisionals is that in the latter case the "fatal act" may be committed at a much later stage in the lifetime of the (parent) application, but I don't think that should make a difference.

So *if* a TBA or the EBA comes up with a solution for poisonous divisionals, it would be nice if it did not limit itself to parents/divisionals. A more general solution would also play nicer with G 1/05 which states that divisionals, once divided, are independent applications. It would also not make sense to punish an applicant for filing multiple applications when he acknowledges a lack of non-unity from the start as compared to the case where he starts with a single application and later files divisionals.

Btw, if G 2/10 had had confirmed the "rule of logic" developed in T 1107/06 (if an application discloses a generic disclosure encompassing a specific disclosure, it also discloses the complement of that specific disclosure within the generic disclosure), that would have given an easy solution. But I completely agree with G 2/10, point 4.5.3, that this approach is flawed.

I should study it better, but my first impression (e.g. from the example discussed in point 11.5.7) is that the Board takes the position that an OR-claim is a claim for which it is possible to "conceptually" identify a limited number of clearly defined alternative subject-matters in much the same way as Tufty "theoretically" identifies the two alternative subject-matters "widget made of copper" and "widget made of a metal that is not copper" in "metal", whereby it is not necessary that each of these subject-matters are individually disclosed by the application (and without a need to invoke G 1/03).

In so far as this interpretation of T 1222/11 is correct, I do not agree with it. I believe an OR-claim as discussed in G 2/98 is one where both alternatives could have been claimed separately without infringing Art. 123(2). But T 1222/11 certainly seems to lend support to Tufty's line of reasoning.

"I believe an OR-claim as discussed in G 2/98 is one where both alternatives could have been claimed separately without infringing Art. 123(2)"

What makes you believe that? I can't see a hint of it in G2/98 itself.

The memorandum, referred to in 6.4 of G2/98 (and T1222/11) is here http://k-slaw.blogspot.co.uk/2013/04/the-memorandum.html and does seem to support generic claim splitting.

Also interesting that as mentioned here http://www.withersrogers.com/news/326/107/A_Storm_in_a_Coffee_Cup the big Nestle case that involves a priority document as prior art has recently had its Board expanded to 5 members to deal with the priority issue.

Personally I've always agreed with the approach Tufty suggests. A claim to "metal" could have been expressly written as "copper or other metal" when filed. The second claim wording is clearly valid- and given that the two expressions have identical meanings and have identical scope it would seem odd if a claim written in the first manner is invalid but the one written in the second manner is valid.

As I explained here, I believe example C of the Memorandum is being misinterpreted.

The situation of example C is that P1 discloses "pipes" and P2 discloses "hollow bodies" (and presumably also "pipes"). According to the example, a claim in the application to "hollow bodies not being pipes" would enjoy priority from P2. However, this is clearly false, unless P2 specifically discloses "hollow bodies not being pipes" (and just "hollow bodies" and "pipes" is not enough, see G 2/10).

If P2 specifically discloses "pipes" and "hollow bodies not being pipes", then of course a claim in the application (which may be assumed to include all of P2) to "hollow bodies" may be thought of as "pipes" OR "hollow bodies not being pipes" and enjoy priority from both. But usually the specific disclosure of "hollow bodies not being pipes" will be missing in P2.

T 1222/11 and the proponents of Tufty's "theoretical splitting" approach seem to be reading into example C that a claim in the application to "hollow bodies not being pipes" would enjoy priority from P2's disclosure of "hollow bodies" (possibly with the help of the P2's disclosure of "pipes"). This is either in direct violation of the interpretation in G 2/98 of the requirement of "same invention" in Art. 87(1), or in direct violation of G 2/10, point 4.5.3 (the incorrect idea being that disclosures in P2 of "hollow bodies" and "pipes" implies a disclosure in P2 of "hollow bodies not being pipes").

For better or worse, Art 54(3) embraces Applicant's own earlier filings. From the Tegernsee papers, I understand that, outside Europe, the provision outside Europe that corresponds to Art 54(3) inside Europe does NOT embrace Applicant's own earlier filings. For this reason, the phenomenon of the poisonous divisional is peculiar to Europe, and not understood by any patent attorney outside Europe.

One might then think it proper for the EPO to finesse out of it. However, whatever finesse is alighted upon, it will surely be assiduously used by later filers when their Art 54(3) novelty is prejudiced by the earlier filing of a competitor. We don't want it to end up that they all get patents, do we? The thickets are thick enough already aren't they? Thick they may be, but not so thick that we have to adopt the American way, making 54(3) references available as obviousness attacks.

Let us Keep It Simple. Under the EPC it is the disclosure Content that counts, and it should always be determined in the same way (directly and unambiguously derivable) whether for Art 54 or 87 or 123(2) EPC. OK?

For the case of an Art. 54(3) novelty attack based on the filing of a competitor, at least in theory G 1/03 already provides a complete solution: the applicant only needs to disclaim that what his competitor filed earlier. There is no way that I can see that a solution for "poisonous divisionals" could give an applicant more than this. It seems impossible to argue that an applicant could keep a claim that covers Art. 54(3) prior art.

With poisonous divisionals (and related situations discussed in other comments), we have the situation that the application itself also discloses the Art. 54(3) prior art, and with the same effective date as that Art. 54(3) prior art. There is already no doubt that the applicant can limit his application to validly claim that Art. 54(3) prior art. The only question is what happens to the remainder of his generic claim, is there a way to save that part. The applicant confronted with Art. 54(3) prior art by a competitor already can keep that part thanks to G 1/03.

Having followed the more recent thread on the IPKat, and read again the Tufty solution above, and thought about it a bit, I want to add my support to it.

What comes to mind is the provision in the UK Patents Act 1949 that graced the disclosure content of the priority document. It went like this:

If you had told the Patent Office (in your prio doc) then told the world during the Paris year, any claim of yours entitled only to the date of filing of your "complete specification" at the end of the Paris year could not be attacked on the basis of your public disclosure, during the Paris year, of that which you had already told the Patent Office about, in your prio doc.

The EPC had no such Provision. Many in the UK warned "No good will come of it. It ain't fair to Inventors". But nobody took any notice.

Instead, we got the "Claim can have multiple priorities" sentence.

What I like about Tufty's "imaginary" (i) Claim Splitting is that you do not have actually to find the words to do it. As we all know, at the EPO it very often happens that everybody can see there is still patentable matter there, after the EPO's excellent search activity reveals closer art, but one can't protect it simply because the words you Need are not in there, verbatim, in your appln as filed.

So, given the strict line the EPO has on verbatim text, I really like it that, with the Tufty solution, a wave of the Hand is instead enough.

The EPO should like it too, should be grateful for the help to inventors that it provides, and for the relief from the mounting tension in the wretched area of "disclaimers".

I think we should consider the purpose and principle of the "priority" claim. It is to allow a patent application to be filed in one country and then allow the applicant to (within one year) choose to also apply for a patent on the same invention in other countries. Hence the term "same invention" in Article 87(1) EPC. So the principle, as already mentioned in previous comments is analogous to Article 123(2) EPC, that the applicant can not alter his invention after he filed for it. In particular the applicant can not generalise his earlier invention in a way not originally disclosed. So if in the copper vs. metal case, when reading the priority application the reader understands only that copper was always the metal used, there is no disclosure of other metals. Then if a second application is filed claiming metal, a generalisation of the copper of the priority application which was not specifically disclosed or implied, the "invention" (which is defined in terms of the claimed scope) is no longer the same and the priority is invalid. It can of course be made valid again by restricting the claim to copper only. The proposed solution to have two alternatives, one copper, one "metal other than copper", is interesting, but would have to be filed as such from the beginning. By this I mean that if there is a parent and divisional, the parent would have to disclose a metal other than copper otherwise the divisional would fail under Article 76(1) EPC. The wording of the description would have to be very carefully formulated, so not just "a metal for example copper", but something like "a metal, preferably copper, but other metals can be used in place of copper". This would allow the first alternative to validly claim priority whilst the seond alternative would not have a valid priority claim but would still be novel over the priority application.

About Me

Tufty the Cat is the nom de chat of UK and European patent attorney David Pearce (LinkedIn profile). Anything written by Tufty should not be taken as constituting legal advice, and no responsibility is taken for anything you might do as a result.